is a director at Sterne, Kessler, Goldstein & Fox P.L.L.C. in the firm’s Electronics Group. With a background in relativistic physics, she specializes in software, digital healthcare, and optical technologies. Having handled hundreds of software and business method applications at the PTO, patent-eligible subject matter (aka “101”) is her special area of expertise. In addition to the preparation and prosecution of patents to develop portfolios for startups and Fortune 100 companies alike, she has been lead counsel in IPRs, CBMs, and reexams for both patent owners and challengers. She has also provided infringement and invalidity analysis in opinions for a variety of technologies.
Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.
This week marks the first anniversary of the Supreme Court issuing its decision in Bilski v. Kappos. The decision held that the machine-or-transformation test is not the exclusive test for patent eligibility, and that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply. The summary of cases prepared by Attorneys Holoubek and Sterne is excellent! It is absolutely must reading for attorneys prosecuting and litigating in this space.